Example arguments, articles, tutorials and presentations for a variety of patent prosecution issues. http://www.foundpersuasive.com On July 27, 2010, Robert W. Bahr, the Acting Associate Commissioner for Patent Examination Policy, released Interim Guidelines highlighting factors to consider when determining whether a process claim satisfies the requirements for subject matter eligibility under 35 U.S.C. 101. The guidelines appear to be more in line with the recent Supreme Court decision in Bilski v. Kappos than the initial guidance that was set forth by the USPTO. http://www.foundpersuasive.com/101_guidelines_bilski.aspx On July 9, 2010, the USPTO issued a draft of their 2010-2015 Strategic Plan. The strategic plan is designed to strengthen the capacity of the USPTO, improve the quality of issued patents and trademarks, and shorten the time required to acquire a patent. This is the first article in a multiple article series by Sheetal Patel that will discuss the various components of the draft Strategic Plan. http://www.foundpersuasive.com/2015_strategic_plan_1.aspx The management at the USPTO has demonstrated a strong commitment to reducing the overall backlog of applications. The stated goal of the newest initiative in this respect is to reduce the overall backlog to 699,000 applications by September 30, 2010. While certain incentives are explicitly provided for supervisory Examiners, and perhaps implicitly for non-supervisory Examiners, whether these incentives are sufficient to facilitate reaching this goal remains to be seen. http://www.foundpersuasive.com/USPTO_backlog_goal.aspx The Court of Appeals for the Federal Circuit (CAFC) recently issued a precedential opinion, In re Giacomini. Since Giacomini did not dispute that the asserted Tran patent describes the invention claimed in Giacomini's patent application, the central issue at the Board was the eligibility of the Tran patent to serve as prior art under 35 U.S.C. § 102(e). The court then explained that 35 U.S.C. § 111(b)(8) makes it clear that provisional patent applications and non-provisional patent applications are given the same privileges under 35 U.S.C. § 119. In light of these sections of the U.S. Code and the long-standing rule that the patentee must be the first inventor, the court held that the Tran patent could claim priority to the earlier-filed provisional application to invalidate the Giacomini application. http://www.foundpersuasive.com/giacomini_sum.aspx Despite the Supreme Court's clear ruling that M-or-T is not the only test for determining subject matter eligibility under 35 U.S.C. § 101, the USPTO has instructed Examiners to reject claims under the M-or-T Test and allegedly pass the burden to Applicants to demonstrate subject matter eligibility. However, merely demonstrating that claims do not meet the M-or-T Test does not show that the claims are directed to an excluded class of subject matter. Rather, the USPTO must demonstrate that the claims are either directed to abstract ideas, laws of nature or natural phenomena. In responding to forthcoming rejections under 35 U.S.C. § 101, Applicants may allege that applying the M-or-T Test does not meet the burden of making a prima facie case, and further argue that the claims are not directed to an abstract idea, a law of nature or natural phenomena. http://www.foundpersuasive.com/101_rejection_bilski.aspx The Court in Bilski largely restored the legal landscape to what it was before the CAFC’s opinion. It did not provide a specific test or bright-line rule for determining whether a claim is an abstract idea and did not apply the machine-or-transformation test to Bilski’s claims. Rather, the Court applied a case-based analysis that primarily focused on the overall thrust, breadth, and widespread applicability of Bilski’s claims. Thus, as claims become broader, while there is no bright-line rule, it seems that the risk of the claims potentially being rejected as abstract ideas. http://www.foundpersuasive.com/bilski_abstract_ideas.aspx FoundPersuasive has started a new section of the site for case summaries. The first new summary in this section, by Jared Olson, discusses the issue of claiming priority that arose in Encyclopaedia Britannica v. Alpine (Case No. 2009-1544). Where there is a chain of priority in a patent family, if one applicaiton fails to make reference to its predecessor, the chain of priroty is broken and the date of the unreferenced application cannot be claimed. http://www.foundpersuasive.com/britannica_sum.aspx The enhanced First Action Interview Pilot Program was recently extended to run through October 1, 2010. The program’s goal is to allow an interview with the Examiner prior to issuance of a first Office Action on the merits, thereby reducing pendency of the patent application. Requirements for qualifying for the program and the program's procedures are discussed in this article by Sheetal Patel. http://www.foundpersuasive.com/PCT_overview.aspx FoundPersuasive has started a new section of the site dedicated to the PCT. The first post is a general overview of the PCT process. The PCT created a unified procedure for filing patent applications that allows Applicants to preserve priority and have the option of protecting inventions in each of the 142 contracting states. The PCT application does not result in any patent rights itself. Rather, PCT is a filing system that also provides a search report and written opinion. PCT Applicants must enter the national phase of patent prosecution to obtain protection in desired member countries. http://www.foundpersuasive.com/PCT_overview.aspx At the USPTO, Examiners receive different amounts of credit time (called “expectancies”) based on their position and the technology that is being examined. Technologies that the USPTO believes to be more complex to examine receive more credit hours per disposal and technologies that are believed to be less complex (such as many simple mechanical inventions) receive fewer credit hours per disposal. Having a brief understanding of the system may help Applicants to understand the time pressures on a given Examiner, and perhaps why many primary Examiners seem to prefer to issue short Office Actions. http://www.foundpersuasive.com/examiner_expectancies.aspx Earlier today, USPTO Director David Kappos posted a blog entry on improving the reexamination process. The post briefly discussed the importance of reexamination and focused mainly on avoiding unnecessary delays resulting from reexamination requests that only assert general allegations instead of clearly identifying specific issues to be considered. The post highlighted the USPTO’s best practices document that is intended to help minimize defective requests and facilitate the initial processing of reexamination requests. http://www.foundpersuasive.com/reexam_best_practices.aspx On June 2, 2010, FoundPersuasive's Michael Leonard attended the Innovation Economy discussion at the Center for American Progress. USPTO Director David Kappos commented on the role of intellectual property in promoting innovation and economic growth. The Director announced that the country stands at a critical juncture economically and intellectual property is essential to economic success in the United States. Director Kappos repeatedly referred to IP as "the currency of innovation" and provided insight into how he believed IP could strengthen the U.S. economy. http://www.foundpersuasive.com/Kappos_CAP_discussion.aspx Appeals and Petitions can be an effective way to advance prosecution when the Applicant and the Examiner are unable to reach an agreement and prosecution before the Examiner, without third party intervention, seems unlikely to be fruitful. This presentation covers the three types: (1) Full Appeals; (2) Pre-Appeal Brief Requests for Review; and (3) Petitions. http://www.foundpersuasive.com/appellate_procedure.aspx The Department of Commerce believes that granting the USPTO fee-setting authority and enhanced post-grant review procedures will have a positive impact. http://www.foundpersuasive.com/patent_reform_article.aspx When preparing for Examiner Interviews, Applicants should consider the Interview process from the Examiner’s perspective. http://www.foundpersuasive.com/USPTO_interview_practice.aspx Determining priority and understanding the complexities of 102(a), (b) and (e) can be difficult. This tutorial offers assistance. http://www.foundpersuasive.com/determining_priority.aspx Appeal Briefs having minor formalities errors that do not substantively affect the BPAI's ability to render a decision will be allowed to proceed through the appeal process. http://www.foundpersuasive.com/appeal_changes.aspx